Thursday, April 23, 2009

Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition

Just when we Patriots fans had seemingly put the heartbreaking 2007 NFL season behind us, here comes the TTAB to open the old wound and pour salt in it. The Board dismissed the Patriots' Section 2(d) opposition to registration of the mark 19-0 THE PERFECT SEASON for various clothing items because Applicant William A. Harpole filed his application two months before Opposer Kraft filed its ITU application for the same mark for clothing and other goods. Kraft Group LLC v. William A. Harpole, 90 USPQ2d 1837 (TTAB 2009) [precedential].

Applicant Harpole, of Centennial, Colorado, filed his application pro se on November 8, 2007, seeking registration on the Supplemental Register. On April 22, 2008, Harpole amended the application to seek registration on the Principal Register under Section 1(b). Opposer Kraft filed its Section 1(b) application on January 17, 2008, two weeks before Super Bowl XLII (which, as we all know, the Giants won). [Can you spell J-I-N-X? - ed.].

So, in order to establish priority in the opposition, Kraft needed to knock out the Harpole application, or at least change its filing date. Kraft claimed that Harpole's application was void ab initio because as of his filing date Harpole had admittedly not used his mark and it therefore was not eligible for registration on the Supplemental Register. Kraft pointed to Rule 2.47(a), which states that "In an application to register on the Supplemental Register under section 23 of the Act, the application shall so indicate and shall specify that the mark has been in use in commerce." Furthermore, Kraft urged that under Rule 2.47(d), an applicant who does does not allege use in commerce is not eligible for registration on the Supplemental Register until an allegation of use is filed. In short, according to Kraft, Harpole did not comply with Rule 2.47 (a), and so the application was bogus from the git-go.

Alternatively, Kraft argued that, just as the original filing date is lost when an application is amended to seek registration on the Supplemental Register, "the inverse applies as well": i.e., even if Harpole's application is not void, it lost its original filing date when amended to the Principal Register. Therefore, the argument went, Kraft has priority.

Applicant Harpole contended that he met the minimum filing requirements for receiving a filing date under Rule 2.21, and that he was not required to specify a filing basis to receive a filing date. In reply, Kraft asserted that Rule 2.21 applies, by its terms, to Section 1 and 44 applications, and does not mention Section 23 (Supplemental Register) applications.

Both parties moved for judgment on the pleadings. The Board ruled in favor of Applicant Harpole:

[W]e are not persuaded that applicant’s application is void ab initio or that its effective filing date must be deemed to be the date on which he amended the application to seek registration on the Principal Register. In particular, we find that opposer has conflated the rule for obtaining a filing date, namely, Trademark Rule 2.21, with the rules that set forth the requirements for obtaining a registration under a particular statutory basis and for a particular register. See, e.g., Trademark Rules 2.32, 2.34(a), and 2.47(a) and (e), 37 C.F.R. §§ 2.32, 2.34(a), and 2.47(a) and (e). [The penalty for improper conflation is 10 yards plus loss of down - ed.]

Even though Harpole's application indicated that he sought a Supplemental Registration, it contained all that was needed to receive a filing date under Rule 2.21(a): the name of the applicant, a correspondence name and address, a listing of goods, and the filing fee for at least one class of goods. Harpole "was not required to specify the filing basis for seeking registration on the Supplemental Register, i.e., Section 1(a) of the Trademark Act, to receive a filing date."

The Trademark Rules and Trademark Office examination practice clearly allow applicant another opportunity to provide certain information missing from the original application so that the mark may be registered, without losing the original filing date. In sum, contrary to opposer’s arguments, Trademark Rule 2.47(a) sets forth the registration requirements for marks to register on the Supplemental Register, not the requirements to obtain a filing date.

Therefore, Harpole's application is not void ab initio.

As to Kraft's alternative argument, the Board found no authority for the proposition that Harpole should be accorded a later filing date. Rather, a continuing valid basis for registration is presumed when an applicant amends its application for registration on the Supplemental Register to one seeking a Principal Registration.

Accordingly, the Board denied Kraft's motion for judgment on the pleadings. Because the filing dates of the parties' respective ITU applications were now established, and because Harpole filed first, Kraft's claim of priority failed as a matter of law. The Board therefore granted Harpole's motion and dismissed the opposition "subject to applicant's establishment of constructive use." [Presumably, Kraft's application will remain suspended until such time as Harpole's application either issues to registration or is abandoned - ed.].

TTABlog comment: I note that the mark 18-1 THE IMPERFECT SEASON appears to be available. At this point, who cares anymore?

Will the Patriots appeal? Seek a re-match? Petitioner the Commissioner? Which Commissioner?

Text Copyright John L. Welch 2009.


At 9:17 AM, Anonymous Anonymous said...

I understand that the board ruled against the Kraft Group so my assumption would be that the trademark belongs to Mr. Harpole. But, when I look up the trademarks on the USPTO website, I find 3 live trademarks (serial numbers 77324426, 77374613, and 77374670), two registered to the Kraft Group (19-0 and 19-0 The Perfect Season) and one registered to Mr. Harpole (19-0 The Perfect Season). So my question is who has the right to use it? What did the decision discussed in your blog really mean. Both filings include IC025. Who would have the right to produce these items if they both have live trademarks for the same phrase?

At 10:07 AM, Blogger John L. Welch said...

Actually, these are three applications, not registrations. Moreover, they are not based on actual use, but on intent-to-use. The issue before the Board was which applicant was entitled to the earlier filing date, because in a situation where neither has used the mark, the first one to file his/its application will be the one entitled to registration.

Normally, the right to a trademark goes to the first user. An intent-to-use applicant is entitled to a “constructive first use date” as of his/its filing date, provided that the applicant actually uses the mark, files proof of use, and obtains the registration. Here, Kraft tried to invalidate Harpole’s earlier filing date, but failed. This means that if and when Harpole uses the mark on his goods, files proof of use, and obtains the registration, he will own the mark because he will have the earlier “constructive” first use date. If Harpole fails to file proof of use, his application will go abandoned and his potential constructive use date will not be perfected. Kraft will then have priority if and when it uses the two marks, files proof of use, and gets the registration.

That’s why the Board’s dismissal is "subject to applicant's establishment of constructive use."

Note that even if Kraft actually uses its mark first (after its filing date of January 17, 2008) and Harpole uses the mark subsequently, Harpole will still have priority because of the constructive use date of November 8, 2008).

At 4:04 PM, Anonymous Anonymous said...

Thank you so much. This definitely gives me a little more clarity to the issue.


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